Friday, 5 April 2013

Marks & Clerk come undone

When filing and prosecuting patent applications, deadlines are extremely important. There is a deadline for most things, and missing one can make the difference between life and death for a patent application, as well as the difference between a satisfied client and a very large insurance claim. One of the most important, if not the most important, things a patent attorney must have therefore is a reliable system for monitoring deadlines so that none are missed unintentionally.

Not filing a request for examination is one of these important deadlines, the latest date for which is 6 months beginning immediately after the date of publication under section 16 (rule 28), in the case of a direct UK application. The deadline can be extended by two months, but only if a request is made under rule 108(2) in time. More time can be bought under rule 108(3) if a good enough reason is provided. Even more time is available by requesting reinstatement under section 20A up to one year after termination of the application, provided it can be shown that the applicant missed the deadline unintentionally. After this, one would normally think that an application can be considered to be finally dead and buried. Sometimes, however, this does not stop people from trying to resurrect an apparently dead application. A recent decision from the UK IPO (YKK Europe Limited, BL O/006/13) shows how far this can go. It also shows that even well-respected large partnerships of patent attorneys have systems and people that can go wrong from time to time.

Patent application GB0922420.5 was filed on 22 December 2009 in the name YKK Europe Limited (a well known manufacturer of zips and other fasteners) by their patent attorneys
Marks and Clerk LLP in Manchester, the application being filed with patents forms 1, 7 and 9 together with the
appropriate fees but without a request for examination (requiring patents form 10). No request for substantive examination was made in due time
following publication of the application on 30 June 2010, which resulted in the application being treated as withdrawn
and terminated with effect from the day following the final date on which the
examination request was due.

On 1 March 2012, over 14 months after the end of the 6 month period for requesting examination, the office received a letter
from M&C asking when they might expect to receive a substantive
examination report. They were informed by the office that the case had been
terminated and that it was now too late to request reinstatement under section 20A. M&C then filed patents form 10 together with an explanation that it was intended to
be filed in due time but the form had never been mailed, even though M&C's internal records had been updated to indicate that the form had been filed. M&C's main argument to have the deadline extended was that the standard form 10 reminder letter sent by the office and usually received before the end of the 6 month period, had not been
received. If it had been it would have alerted them to the omission. This, M&C argued, led to the failure to file the form in time being attributable to an
irregularity with the IPO or a communication service. As such, an extension of
time under rule 28(2) was requested under rule 107 (correction of irregularities) or rule 111 (delays in communication services). The office indicated
that there was no scope under either rule to extend the time limit because a
check of the office's records indicated that the letter had been issued and there
was no indication an irregularity had occurred. Furthermore, while the reminder
letter might have highlighted the failure of the attorneys to file the form 10
it could not be said that the failure to receive the reminder was the main
cause of the form not being filed in time.

M&C, represented by counsel Richard Davis, argued that they were
entitled to rely on the failsafe of the reminder letter in the event of a
breakdown in their own systems, referring to Carrington's Patent, BL O/22/98 and the EPO decision J 23/87,
arguing that but for the loss of the reminder letter the form was not filed in
time. Witness statements from the M&C's records system manager and the office
managing partner explained how their systems worked, of which the
form 10 reminder letter formed an integral part, and indicated the specific
training given to its patent attorneys in relation to its records systems that
would have prompted the attorney to check the correct status of the case in the
event a reminder letter was received.

The hearing officer considered that the issue was whether
the applicant's failure to file form 10 on time was wholly or mainly
attributable to a failure in the postal service which led to the non-receipt of
the reminder letter. Only if this was the case would it be necessary to
consider whether rule 111 allowed
the comptroller to reverse the terminated status of the application. Regarding
whether the failure was attributable to a failure of a communication service,
evidence showed that M&C's records system had been updated to indicate
that it had been filed, which meant that the alerts built into the system were
not triggered. Furthermore, official records indicated that two pieces of
correspondence were sent by the IPO and there was no evidence
to suggest that these were not received. Despite the apparent stringency of M&C's records system, at least two signposts had been overlooked, the last
of which should have been the reminder letter. Although the evidence indicated
that, on the balance of probabilities, the reminder letter had not been
received this was not the sole indicator supplied by the IPO that something was
awry, and the hearing officer did not accept that the failure to file form 10
in time was wholly or mainly attributable to the non-delivery of the reminder
letter.

In relation to the "but for" test, although the final error appeared to be a failure in the
communication service this was not the main reason for the failure as there was at least one earlier failure to file the form. The fundamental failure to file the form
in time resulted from the unexplained failure by M&C to send the form
when the application was filed and the erroneous entry on their
internal records system that the form had been filed. This error was compounded
by the fact that two pieces of correspondence were overlooked, whilst a third
was not received. None of these would have come into play had it not been for
the original error. In conclusion the hearing officer considered that the
failure was not wholly or mainly attributable to the failure of communication
service, and that the period for filing the request for examination could not
be extended under rule 111. The
question of whether the rule could allow a terminated status to be reversed did
not therefore arise.

It appears that the lesson to be learned from this case, at least for patent attorneys, is not to blindly assume that your own records are correct. Even if nothing appears to be awry, it is always best to check the patent office records to make sure, and it is certainly not good practice to ignore reminders from the patent office about deadlines that might be missed unless you can be sure there is no problem. The fact that M&C were unable, or unwilling, to explain the discrepancy between their own records and those of the patent office, which would have been publicly available online as from the publication date, indicates that there may have been an over-reliance on their own records system. Records are, of course, only as good as the data that is entered into them, and errors can occur. What is important is having a system where errors can be spotted and corrected. This of course requires people who can think about what the piece of paper in front of them actually means, rather than dismissing it as being somebody else's problem.

Do you work for Marks & Clerk by any chance, Anonymous? I understand perfectly well that errors can happen to anyone. There are, however, always lessons to be learned. It helps nobody by keeping it quiet, nor does it help by making snide remarks about someone who is just trying to report and understand from the outside what went on. It seems to me that there was an error, and the patent attorney was ultimately responsible. That much seems uncontroversial to me. If you know better, please do tell. If you were involved in the case itself it is understandable how you might think my article patronising, as you have probably already learned the lesson from within. Peronally I just thought I was just stating the bleeding obvious.

About Me

Tufty the Cat is the nom de chat of UK and European patent attorney David Pearce (LinkedIn profile). Anything written by Tufty should not be taken as constituting legal advice, and no responsibility is taken for anything you might do as a result.